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India IP Policy, Patent Legislation: Amends Patent Rules to Expedite Grant

The Patent (Amendment) Rules, 2016 were implemented by the Indian Patent Office on 16 May 2016. The salient features of the said rules are as follows:

  • Reduction of time to file response to First Examination Report (FER)

The time allowed to respond to a FER for putting an application in order for grant has been reduced from 12 months to 6 months from the date of issuance of the FER. Such time may be further extended once by a period of 3 months by filing a request for extension using Form 4 along with the prescribed fee before the expiry of the first period.

  • Request for Expedited Examination (New Rule 24C)

An applicant may file a request for expedited examination using Form 18A along with payment of the prescribed fee on any of the following grounds:

  • India has been indicated as the International Search Authority (ISA) or the International Preliminary Examination Authority (IPEA), or
  • The applicant is a startup.

A Request for Expedited Examination has to be accompanied by a Request for publication if the application is yet to be published.

A Request for (normal) Examination may be converted to a Request for Expedited Examination by paying the relevant fees and satisfying the criteria for Expedited Examination. There is no specific due date where such a request has to be filed.

If a Request for Expedited Examination does not meet the requirements of the rule, the applicant shall be notified and the request shall be processed as a regular examination request.

The applicant can expect to receive a First Examination Report (FER) within 105 days of acceptance of the Request for Expedited Examination.

The Controller may limit the number of requests for expedited examination to be received during the year by way of a notice to be published in the official journal.

  • Divisional application

Where the parent application has already been referred for examination, the divisional application shall have to be filed along with a request for examination. This is a change from the earlier provisions where the applicant has up to 6 months from the filing of the divisional application to file a request for examination. The divisional application shall be published within 1 month and be referred to the examiner within 1 month of the publication.

  • Deletion of Claims at National Phase Entry

The applicant may now delete claims at the time of National Phase Entry. This is a change from the earlier provisions where no deletion is allowed.  This rule allows the applicant to delete the claims that are not patentable in India and also reduces the official fees to be paid for additional claims

  • Time Limit for Submission of Power Of Attorney (POA)

The applicant is now required to file the POA, at the latest, within 3 months from filing the application. Failing which, no action shall be taken with regard to the application until the deficiency is resolved.  Under the previous regime, there is no time limit for submitting a POA unless an objection for the same is raised in a FER.

  • Enhancement in Hearing Procedures

A hearing may now be conducted using video-conferencing or audio-visual communication devices. Prior to the amendments, the applicant or his agent was required to appear in person before the Controller. In all cases of a hearing, the written submissions and the relevant documents, if any, shall be filed within fifteen days from the date of hearing.

The applicant may also make a request for an adjournment of the hearing with reasonable cause along with the prescribed fee, at least 3 days before the date of hearing. The Controller, if he deems fit, may adjourn the hearing and notify the concerned parties, provided that no party shall be given more than 2 adjournments and each adjournment shall not be for more than 30 days.

  • Refund of Fee

The applicant may now claim a refund of up to 90% of the examination fee if they opt to withdraw the application actively using Form 29 before the issuance of the First Examination Report. There is no such provision to allow refund of examination fee previously.

  • Maximum Fee for Filing of Sequence Listing

Under the amended rules, the applicant is required to pay only for the first 150 pages of sequence listing submission. There is no such fee cap before the amendment.

The amended rules serve to streamline the Indian patent examination process and procedure. It also demonstrates the Indian Government’s commitment to continuously review and strengthen its IP regime to align to global practices. Further relaxation and amendment can certainly be expected to promote a holistic and conducive ecosystem for the IP community.